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Tuesday, 23 October 2007

The applicant applied to register LICK ME ICE CREAM for ice cream and other frozen desserts under Class 30 of the Nice Agreement. The application was opposed by Minghella Ltd, which argued that the mark was descriptive and lacked distinctiveness because the mark was entirely descriptive of the way that ice cream is consumed, and consequently would not be viewed as a badge of origin. [Not so says the IPKat – one should never underestimate the joys of biting into ice cream].

Not so, Mr Hearing Office Salthouse found.

On the issue of distinctiveness, while LICK ME would be seen as an invitation to eat the product, it was unusual both for being gramatically incorrect, and because it was the product itself which was extending the invitation. Consequently, it would be seen as a badge of origin and consumers would be able to use the sign to make repeat purchages if the ice cream proved tasty.

The sign also wasn’t descriptive. the quality. While the term LICK ME would be seen as saying that the ice cream was ‘so good that you will want to lick it in order to prolong the experience, this was not a usual method of describing ice creams.

The IPKat says that clearly Mr Hearing Office Salthouse hasn’t read Alice Through the Looking Glass. On a more serious note, the IPKat can begrudgingly see why the mark doesn’t fit within any of the grounds for the refusal of registration, but at the same time, it still feels like the sort of term that other traders might need to use.

3 comments:

Anonymous
said...

I've always felt the IPKat's threshold is far too high.

You'd be refusing everything, along the following lines " Er, I can see that the mark doesn't fit with any of the grounds of refusal but, um,er, I still think it's a term other traders might need. It's just a feeling like ".

I agree wholeheartedly with the Kat: an anthropomorphous ice-cream must remain free to use the words "lick me" - and by extension its supplier or manufacturer must, too. Surely it's like "Treat"? But more than that, isn't it just an illustration of lazy brand creation? If such a mark can serve as an indication of origin, it also speaks of a lack of imagination on the part of consumers and a further unwarranted extension of trade mark protection.

Yes, but you still have to nail the objection to a specific provision rather than a vague feeling or principle - "lazy", "unwarranted" or "lacks imagination" just are not good enough. In fact, come to think of it, these are qualifications for registration rather than exclusion !!

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